TRADEMARK OWNERSHIP

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TRADEMARK OWNERSHIP

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ITS MINENO, ITS MINE!

• The one who USES the mark FIRST is the owner
• NOT the one to invent it or register it

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TM ownership inures to the legal entity who in
fact uses the mark as a symbol of origin
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INDIVIDUAL V. CORPORATION
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Corporation is using TM

• The corporation is the owner
• NOT the principal officer and/or shareholder

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EMPLOYERV.EMPLOYEE
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ILLUSTRATION

• Employee designs a mark in the course of
  employment
• Employer uses it
• EMPLOYER IS THE OWNER

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ILLUSTRATION

• Person had a business selling product under a
  mark
• Entered into employment and agreed to assign to
  employer all marks developed as an employee
• EMPLOYEE OWNS PRE-EMPLOYMENT MARK

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ASSIGNMENTS

• The assignment must
• be given for consideration, or else made under
  seal
• clearly identify the marks
• clearly identify the assignor and assignee
• clearly indicate that goodwill is included

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RECORDING AN ASSIGNMENT

• To record an assignment of a federal
  registration or a pending application, there must
  be a written form of assignment.

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Lilling Lilling P.C.WWW.LILLING.COM(914)
684-0600 White Plains, NY bruce_at_lilling.com ja
ckie_at_lilling.com